ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Canadian Institute of Chartered Business Valuators v. Seungsun Chung Case No. D2024-4662 1. The Parties The Complainant is Canadian Institute of Chartered Business Valuators, Canada, represented by Aird & Berlis LLP, Canada. The Respondent is Seungsun Chung, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2024. On November 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (unidentified) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 20, 2024. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2024.
page 2 The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 18, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant was founded in 1971 and is dedicated to form business valuators in Canada. The Complainant operates under the CBV INSTITUTE trademark and “CBV” stands for “Chartered Institute Valuators” that provides public education resources, manages student enrolment, and communicates with its members through its official website “www.cbvinstitute.com”. The Complainant owns and uses many registered trademarks for CBV or including CBV in Canada, the United States, and the United Kingdom, and also the certification mark CBV. Relevant to this Complaint are the trademarks mentioned below. Canadian Trademark Registration No. 1067773 CBV INSTITUTE, registered on January 3, 2020, in classes 9, 16, 35, 36, and 41; United Kingdom Trademark Registration No. UK 00003345977 CBV INSTITUTE, (collective mark), registered on February 22, 2019, in classes 9, 16, 35, 41, and 42; United States Trademark Registration No. 6121697 CBV INSTITUTE, registered on August 11, 2020, in classes 9, 16, 36, 35, and 41. The disputed domain name was registered on February 24, 2024 and resolves to a Domain Broker Service page indicating that it “may be able to get it for you. Find out how.”. The Complainant has proven that the disputed domain name has been used as part of an email address in a phishing scheme by an exchange of emails with a client of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The CBV designation is an internationally recognized indicia of business valuation excellence. To be eligible to write the CBV exam, students must obtain a minimum of 1,500 hours of work experience and pass two years of coursework. Once licensed, members must abide by a Code of Ethics and Practice Standards established by the Complainant to maintain their designation. Practice Standards include annual continuing professional development requirements. Notably, the Complainant contends the Respondent has intentionally registered and used the disputed domain name to be confusing with the Complainant’s CBV INSTITUTE mark and has targeted the Complainant’s clients for phishing. It has done so by creating a confusingly similar domain name and email addresses to impersonate the Complainant. As shown in the emails and fraudulent invoices shown in Annex 6 to the Complaint, at least one person was targeted by the scheme, with the potential to scam many more.
page 3 The Respondent has no conceivable good faith use of the disputed domain name, having abused the Complainant’s CBV INSTITUTE mark, as well as the Complainant’s reputation and goodwill, to commit fraud. The Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “invoicing”, may bear on assessment of the second and third elements, the Panel finds the addition of such term with a hyphen does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
page 4 Panels have held that the use of a domain name for illegal activity here, claimed as applicable to this case: phishing, impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark CBV INSTITUTE mentioned in section 4 above (Factual Background) when it registered the disputed domain name on February 24, 2024. In accordance with section 3.1.4 of WIPO Overview 3.0, the Panel considers that the inclusion of the Complainant’s CBV INSTITUTE trademark in the disputed domain name creates a presumption of bad faith registration. The addition of the term “invoicing” in the disputed domain name tends to strengthen the confusion between the Complainant’s trademark and the disputed domain name, as it refers to the Complainant’s billing system and business. The Respondent, when registering the disputed domain name, has targeted the Complainant’s business and its trademark CBV INSTITUTE with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trademark for its own benefit. The absence of rights or legitimate interests, coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0). Lastly, panels have held that the use of a domain name for illegal activity here, claimed phishing, impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. /Miguel B. O'Farrell/ Miguel B. O'Farrell Sole Panelist Date: December 27, 2024
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